Emily Chow is an IPilogue Writer and a 2L JD Candidate at Osgoode Hall Law School.

On July 15, 2022, the Supreme Court of Canada (“SCC”) released its for the case Society of Composers, Authors and Music Publishers of Canada (“SOCAN”) v. Entertainment Software Association (“ESA”). The unanimous decision written by Justice Rowe clarified provisions of the ��(the “A����”), ruling that the Act only requires users to pay one royalty fee to stream works online as opposed to the two fees proposed by .

Judicial History

In 2012, Parliament amended the Copyright Act to align copyright legislation with the , which Canada signed in 1997. Among the changes was the addition of section which was meant to clarify subsection ��defining “communication of a work or other subject‑matter to the public by telecommunication includes making it available to the public by telecommunication in a way that allows a member of the public to have access to it from a place and at a time individually chosen by that member of the public.”

As the central authority for the approval of tariffs, the held proceedings to determine the amount of royalties to be paid, receiving submissions from various groups on how to interpret the new sections of the Copyright Act. , a music licensing organization representing over 175,000 music creators, publishers and visual artists, argued that s. 2.4(1.1) required royalties to be paid whenever a copyrighted work was posted on the Internet for public access. The Copyright Board concurred, deeming that the act of making works available was in itself a separately protected and compensable activity. In effect, there would be two payable royalties: one for when the provider makes the work available online, and another for when a user actually streams or downloads a work.

The Federal Court of Appeal the Copyright Board’s decision, concluding that Parliament did not intend to introduce the two-royalties system for users accessing works online.

Key Takeaways

Although differing in the exact standard of review for the Copyright Board’s decision, the SCC unanimously dismissed SOCAN and Music Canada’s appeal. The SCC found that the Copyright Board and SOCAN’s interpretation of the Copyright Act’s new sections undermined the purpose of the Act itself. As per the principle of , “distributing functionally equivalent works through old or new technology should engage the same copyright interests […] what matters is what the user receives, not how the user receives it” absent parliamentary intent to the contrary. Section 2.4(1.1) merely clarifies that a work is “communicated” when it is made available or uploaded – as , streaming begins when the work was made available online and continues throughout to the end user’s accessing of the work. Thus, section 2.4(1.1) does not entitle authors to an additional “making available” royalty for making the work available online. It is merely part of the public performance right enshrined in section 3(1)(f).

The SCC also addressed two non-copyright specific issues relevant to the larger practice of law in Canada. Firstly, the SCC recognized a under to apply for instances of concurrent first instance jurisdiction, which allows both administrative bodies and courts to have this first instance jurisdiction over a legal issue in a statute (). Secondly, the Court reiterated the role international treaties play in statutory interpretation. Although WIPO’s Copyright Treaty is relevant to the statutory interpretation of the Act, it cannot “overwhelm clear legislative intent” (). The SCC found that the Copyright Board erred by privileging the Copyright Treaty and Canada’s signatory obligations over the domestic Copyright Act in its interpretation.

The Copyright Society of the USA will host a , breaking down the decision and exploring its broader implications for all stakeholders in the arenas of licensing, collective administration, and enforcement. The event features IP Osgoode’s own Professor David Vaver alongside Professor Ysolde Gendreau from the University of Montreal. It will be taking place virtually on Wednesday, August 3, 2022, at 12pm EST. Details and registration information can be found

Further reading:

Breakdown of SOCAN v ESA’s administrative law related holdings:

US Government’s Making Available Study:

The post SOCAN v ESA: Royalties in the Age of Streaming appeared first on IPOsgoode.

Photo by from

Sabrina Macklai is an IPilogue Senior Editor and a 2L JD Candidate at the University of Toronto Faculty of Law.

On July 30, the Supreme Court of Canada released their much-anticipated judgement in [91��ɫ]. The unanimous decision, written by Justice Abella, endorses several past Supreme Court judgements including and . Perhaps one of the most important copyright decisions since the 2012 ‘’ cases, 91��ɫ reflects the Supreme Court’s intention to develop Canadian copyright law in a way that maintains a balance between users’ and creators’ rights.

Background

Historically, Canadian educational institutions negotiated licence agreements with copyright collectives Access Copyright and Copibec to fulfill their copying needs within the collectives’ repertoires. In 2010, Access Copyright sought the Copyright Board’s approval for a new proposed tariff for post-secondary education institutions of a flat fee of $45 per full-time university student and $35 per full-time college student per year. This was a drastic increase from the fees stipulated in the 1994 to 2010 licence agreement between Access Copyright and post-secondary institutions. On December 23, 2010, the Copyright Board granted Access Copyright an interim tariff at the rate of $3.38 per full-time student and $0.10 per page for course packs, receiving . In anticipation of the upcoming academic session in July of 2011, 91��ɫ chose to “opt out” of Access Copyright’s licensing agreement and rely on alternative means, particularly the “educational purpose” under the , to continue reproducing copyrighted works for their students. Like with most educational and library institutions, 91��ɫ published internal “Fair Dealing Guidelines” that interpret section 29 to help 91��ɫ faculty and staff comply with the law. Access Copyright subsequently sued for copyright infringement. 91��ɫ then counterclaimed and sought a declaration that its Fair Dealing Guidelines complied with section 29 of the Act.

In 2017, ruled in favour of Access Copyright in all regards, claiming that the interim tariff is mandatory and that 91��ɫ’s Fair Dealing Guidelines and its actual practices are not fair under section 29. In 2020, the reversed the lower court’s decision on the tariff issue, finding that tariffs set by the Copyright Board are only applicable to those voluntarily under a licence with Access Copyright and therefore not mandatory. However, on the fair dealing issue, the Federal Court of Appeal found that the lower court did not make any “palpable and overriding errors” in conducting their fair dealing analysis. 

Issues at Appeal

The Supreme Court appeal considered two issues: 1) is the tariff mandatory? and 2) if the tariff is mandatory, are 91��ɫ’s Fair Dealing Guidelines “fair” such that their activities may be covered by section 29 fair dealing?

Access Copyright’s Non-Mandatory Interim Tariff

The Supreme Court upheld the Federal Court of Appeal’s reasoning on the tariffs issue, agreeing that the interim tariff is not mandatory and thus not enforceable against 91��ɫ. They affirmed that users are free to pursue alternative methods to lawfully copy works, such as acquiring transactional or site licences or relying on section 29 fair dealing. In their reasons, they drew heavily upon arguments made by Professor Ariel Katz at the University of Toronto Faculty of Law, who asserted that where a user makes an unauthorized use, the appropriate remedy is an action for infringement—one that Access Copyright lacks standing to initiate.

Considering the Ultimate User in Fair Dealing Analyses

Although the Court deemed it inappropriate to rule on fair dealing, given that this is not a copyright infringement suit, Justice Abella nonetheless provided helpful obiter on fair dealing in Canada. Namely, she clarified that the reasoning of both the Federal Court and Federal Court of Appeal on the fair dealing issue is not endorsed. Both lower courts erred in their evaluation of the purpose of the work, by only considering the institutional perspective. As Justice Abella discussed in multiple past decisions, including Alberta, the end-user perspective must also be considered when assessing the fairness of a dealing. In this case, but for the students, there would be no copying. Therefore, the judgement must consider the students’ perspective. The institutional purpose is not completely irrelevant, but it must be interpreted in light of the end-user. Here, Justice Abella found that educational institutions have no “ulterior or commercial purpose” when copying for their students’ benefit under fair dealing, even if the institutions benefit financially by saving funds. As the first discussion of the educational purpose of fair dealing since it was introduced during the , the Supreme Court clarifies that the appropriate way to assess an educational institution’s fair dealing practices is to determine whether those practices facilitate their students’ educational purposes in a fair manner, maintaining the balance between users’ and creators’ rights.

91��ɫ adds to a growing list of copyright jurisprudence by the Supreme Court, many of which were spearheaded by the . This latest decision delivers several wins to the users’ rights community, particularly through confirming that users always have the choice to rely on section 29 fair dealing when working with copyright-protected materials. Educators and librarians across the country can breathe a sigh of relief that they may continue to lawfully offer their services, many of which rely on fair dealing, to the benefit of their students and patrons.

The post A Win for Users’ Rights: Supreme Court Finds Access Copyright Tariff Not Mandatory and End-User Perspective Must be Considered in Fair Dealing Analyses appeared first on IPOsgoode.

The Supreme Court of Canada dealt a strong blow to the so-called promise doctrine and made international precedent when it ordered Google to de-index infringing websites across the global Internet. These and the other developments noted below pave the way for an IP-busy 2018 as we await the release of the National IP Strategy, which will hopefully set the stage for Canadian advancements and benefits from emerging technologies and business practices. Here at IP Osgoode, we are set to examine the promise and challenges associated with one of these important technology areas: artificial intelligence (AI). On February 2, 2018, our AI conference, “Bracing for Impact: The Artificial Intelligence Challenge”, will feature internationally renowned AI experts from Canada and abroad. For more information and registration, visit .

We hope you can take part in our AI conference as well as our regular suite of exciting activities and initiatives as 2018 gets further underway!

PATENTS

The patent law landscape experienced incremental changes and some profound shifts that seemed to mimic the changes of the seasons here in Canada during 2017.

It’s All About the Money

The year kicked off with a chilling warning to Non-Practicing Entities (NPEs) seeking to protect patent rights through litigation. NPEs commencing patent infringement actions “without a clear theory of infringement” may be sanctioned with for disregarding the “serious cost consequences [following from] allegations shown to be unwarranted”. In , the Federal Court of Canada was satisfied that the defendant’s activities were non-infringing; and because the plaintiffs “should have known that Bell did not infringe”, they were ordered to pay solicitor-client costs.

The Federal Court of Appeal reminded us in February that in “an extremely complex patent case involving [...] 22 allegations of invalidity, 33 days of discovery, 32 days of trial, written submission exceeding 700 pages, and the closing argument lasting three days”.

The Federal Court of Appeal also decided on profit recovery for infringing activities. In , the Court highlighted that the differential profit approach of recovery is to “ensure that a patentee only receives that portion of the infringer’s profit that is causally attributable to the invention”. Accordingly, the Court asserted that it is as the actual value of the “patent lies in the ability of the patentee to exclude competitors and competition” .

The Season of New Life and Law

In the UK, the beginning of spring was marked with a UK Patent Court decision on the interplay between IP and Competition Law. In , the court tackled issues involving standard-essential patents (SEPs), as well as the (FRAND) principles applicable to licensing agreements between patentees and licensees. In particular, the UK Court explained that the requirement to commit to FRAND terms in a SEP licence serves the public interest insofar as it spurs “the best and most up-to-date technical” standards to be set and inventors to “obtain a fair reward for their invention”. While Canadian jurisprudence is yet to develop on what negotiations are FRAND and what are not, the guidelines forecast issues that industries might face on this matter.

Shortly after, the Federal Court of Canada released its , which aimed at developing efficient, expedient, and proportional use of court time. A rundown of the particularly noteworthy protocols to streamline trials and court’s resources is available .

The spring also ushered in a as the Comprehensive Economic and Trade Agreement (CETA) between Canada and the European Union received Royal Assent on the 16^th of May []. It is important to note that CETA listed the ICSID tribunal as the main recourse for disputes. on how this may affect the IP environment domestically suggests that the ICSID’s unappealable decisions could be a new problem for Canada, absent the requirement of certification in domestic courts. So, in addition to CETA’s implications toward patent term restoration, appeals under NOC regulations, and the potential end of dual litigation — see general outline and significance for pharmaceutical patent protection — further developments stemming from the tribunal jurisdiction are anticipated for the new year.

The last development of the season provided an important lesson from a business perspective regarding IP transfer agreements. In , poor management of IP rights and poorly conceived transfer agreements proved to be a hindrance to enforceability. The Federal Court also delivered an important lesson around patent infringement when it announced the Public Judgement and Reasons in , awarding Dow Chemical the largest patent infringement monetary award in Canadian history: $644,623,550 and pre-judgement interest.

Utility, Enforceability, and NOCs

Two hot-button issues from the Supreme Court of Canada heated up the start of the summer. One involved the decision that did away with the Promise Doctrine, and the other pertained to a global takedown order imposed on an online intermediary (Google) that may change the future of IP enforcement.

In the first, , the Court effectively abolished the Promise Doctrine on utility. , all explicit promises of utility made by a patentee had to be fulfilled for the patent to be valid. The Court nonetheless deemed this requirement “unsound” and “not good law”. For the Court, “depriv[ing] such an invention of patent protection if even one ‘promised’ use is not soundly predicted or demonstrated is punitive and has no basis in the Act”. So, in bringing the common-law more into accord with the requirements for patentability, the Court revamped , requiring that the patentees demonstrate, essentially, what the subject-matter of the invention is, and how it is useful in serving a practical purpose.

The second case, , played an important role in increasing IP enforcement outreach in the Internet era. It provides the courts with a more effective measure to protect IP rights. Specifically, the precedent allows an IP owner to obtain a court order against search engines — such as Google in this case — for the removal, on a global scale, of search results (websites) that facilitate infringement of IP rights. It will be interesting to observe whether or not this decision affecting online intermediaries such as Google will to address the problem of unreachable wrongdoers, or will conversely be deemed a to non-infringing actors that are a .

The end of summer featured the ’s proposed amendments to the Notice of Compliance (NOC) Regulations. The amendments seek to update the pharmaceutical patent litigation regime in Canada, enabling Canada to . A discussion of the most significant changes to Canada’s NOC Regulations can be found . The changes will apply to proceedings in which Notices of Allegation (NOAs) were served on or after September 21, 2017 — the date of the NOC Regulations.

Promptly after, the Federal Court released its for actions under the amended NOC Regulations to promote efficiency in light of the strict timelines — 24-month timeframe for a proceeding to be completed and a decision rendered — imposed by the . The guidelines set out procedural rules to be observed for proceedings under the amended NOC Regulations. Some key points worthwhile to look at were outlined .

A Not-So-Obvious Future

Lastly, the winter months saw an of the Canadian law of obviousness. In , the Federal Court of Appeal deemed the “inventive concept” set out in the case an “unnecessary satellite debate” in the analysis of obviousness. After being over the years — see , — the current test for obviousness seems to place emphasis on the as a , at least until a clearer definition of the “inventive concept” is developed by the Supreme Court.

TRADEMARKS

2017 saw a number of notable Canadian court decisions in the realm of trademark law. Outside of the courts, other developments will also shape the IP landscape going forward.

Consumer Criticism Gets a Bit Riskier

In a case dealing with consumer criticism of a brand - - the Federal Court returned a decision favourable to brand-owners. The plaintiff, United Airlines, sued the defendant, Jeremy Cooperstock, for trademark and copyright infringement, depreciation of goodwill, and passing off, over his “gripe site” . The court characterized the website as a “consumer criticism website where visitors can find information on the Plaintiff, submit complaints about the Plaintiff, and read complaints about the Plaintiff dating back to 1998 in the database of complaints.” The website included an .

Justice Phelan held that Cooperstock provided “services” through the website and that the marks were “being used or displayed in the advertising or performance of services pursuant to s 4(2) of the Trade-marks Act.” He also found that there was a likelihood of confusion. As a result, the defendant was found to have infringed s. 20(1)(a).

The defendant was also found liable for passing off: the court found significant goodwill attached to the United marks, that there was confusion and the likelihood of confusion, and that the plaintiff�� suffered damages or was likely to suffer potential damages.

The court held that Cooperstock “intentionally attempted to attract the Plaintiff’s online consumers to his own website for notoriety” and therefore depreciated the goodwill associated with the United marks, contrary to s. 22. Of note, the Defendant was also found to have infringed copyright in the marks and Justice Phelan dismissed the fair dealing defence of parody.

Whereas previous decisions such as Michelin v. Canadian Auto Workers and��BCAA et al. v. Office and Professional Employees’ Int. Union et al., had held that trademark owners’ rights to control the use of their mark in the context of criticism were limited, the United case demonstrates that brand critics must be careful in their use of brands’ logos and trademarks. While , “[i]n this case, the Defendant sailed too close to the wind – and he was put up on the rocks.”

Why Seek an Injunction Anywhere Else?

In , the plaintiff Sleep Country was successful in its motion for an interlocutory injunction. Sleep Country sought to restrain Sears from using the slogan “THERE IS NO REASON TO BUY A MATTRESS ANYWHERE ELSE”, which it argued was confusing with its own slogan “WHY BUY A MATTRESS ANYWHERE ELSE?” Sleep Country alleged that Sears’ use of the slogan was causing harm to Sleep Country as “a result of confusion between the two slogans, as well as depreciation of the goodwill and loss of distinctiveness of Sleep Country's registered trade-marks.”

The court considered the tripartite RJR-MacDonald test for issuing such an injunction: a serious issue has been raised, the party seeking the injunction will suffer irreparable harm if the injunction is not granted, and the balance of convenience favours the seeking party. The key issue on the motion was irreparable harm, which the court found was established by Sleep Country’s “concrete and non-speculative evidence.” Justice Kane held that lost sales, loss of distinctiveness, and depreciation of value of the slogan would lead to irreparable harm, and that the harm could not easily be quantified. The balance of convenience was also found to favour Sleep Country.

It has traditionally been quite difficult for trademark owners to obtain interlocutory injunctions. The Sleep Country case indicates that the courts may be relaxing the onus on trademark owners to prove irreparable harm, particularly in cases where confusion is quite apparent.

Notably, the Quebec Superior Court in denied the plaintiff a similar injunction because “the Court cannot come to the conclusion that it is clear that the use by Cascades new Fluff trademark will cause confusion with the Royale trademarks.” Irving dealt with the allegation that Cascades’ fluffy bunny was confusing with Irving’s furry Royale kittens. The court concluded that “the use of white furry animals is not unique to the packaging for living's products” and that any harm would be quantifiable. Contrasted with Sleep Country, in which it was held that any harm would be too difficult to quantify, Irving shows that it may still be difficult for trademark owners to obtain interlocutory injunctions.

Injunctions Go Global

In a case that dealt with trade secrets and passing off, , the Supreme Court affirmed the effectiveness of an extra-territorial injunction granted by the lower courts. The issue on appeal was “whether Google can be ordered, pending a trial, to globally de-index the websites of a company which, in breach of several court orders, is using those websites to unlawfully sell the intellectual property of another company.”

The court concluded that the injunction was the only way to mitigate the harm to Equustek pending the resolution of the underlying litigation. The case therefore stands for the availability of an extra-territorial injunction as an equitable remedy in Canadian courts: “Where it is necessary to ensure the injunction’s effectiveness, a court can grant an injunction enjoining conduct anywhere in the world.”

Among the other trademark cases decided by Canadian courts this year, and are of particular interest.�� In Travelway, the Federal Court of Appeal held that owning a registered mark is not a complete defence to infringement – the respondent’s registered mark was held to infringe that of the applicant’s. In Diageo, the Federal Court held that Heaven Hill’s Admiral Nelson rum products infringed Diageo’s registered Captain Morgan marks. The court considered the plaintiff and defendant’s trade dress and found the Captain Morgan trade dress to be a distinguishing guise and therefore enforceable under the Trade-marks Act. The court also found that the goodwill associated with the Captain Morgan mark had been depreciated.

Other Changes to Trademark Law

Canada’s updated Trademarks Act is set to come into force in early 2019. In June 2017, the the first draft of the new Trademark Regulations. Comments were accepted until July 21, 2017 and will be taken into consideration when revising the draft regulations. Among the notable changes coming in 2019 are Canada’s accession to the Madrid Protocol, the Singapore Treaty, and the Nice Agreement and its classification system. Also significant will be the removal of the use requirement at the time of registration.

COPYRIGHT

2017 continued many of the debates and cases started from the previous year. While some decisions received accolades, others received outright criticism. As was the case in 2016, fair dealing questions came to the fore and hit close to home at 91��ɫ.

Fear Dealing and Post-Secondary Education

In a much anticipated decision, the Federal Court ruled against 91��ɫ in and directed the university to pay an interim tariff to Access Copyright. In 2011, 91��ɫ opted out of the Access Copyright licence due to increasing tariffs and implemented its own copyright guidelines. Crucially, the 91��ɫ guidelines allowed students enrolled in a class or course to receive a single copy through a coursepack or via a posting on an online learning management system if the copying was done in accordance with “fair dealing”. However, the Federal Court held that 91��ɫ did not have any right to opt-out of tariffs and that the university’s guidelines were arbitrary and not compliant with section 29 of the . Among other things, the guidelines operated under the assumption that the use of 10% of a copyright-protected work was “fair dealing” but did not provide an explanation. Quantitatively, this threshold might seem to restrict copying of an entire text. But, as , qualitatively, the parts copied may constitute the “core” of the work, making such use “unfair,” and conceivably allow for the reproduction of the entirety of a work if multiple sections are used across courses and faculties. Further, the court emphasised the school’s failure to comply with the guidelines and therefore, enforced the interim tariff. the inclusion of “education” as a fair dealing purpose played little role in this decision. While much attention on the case framed the important issues with respect to fair dealing, note that the case was not about copyright infringement, but rather whether tariffs imposed by the Copyright Board of Canada are mandatory for post-secondary institutions that use copyright-protected material licensed by Access Copyright. 91��ɫ indicates it will the decision so these questions will continue in 2018 and beyond.

Anti-Circumvention and Technological Protection Measures

Setting precedent in 2017, in the Federal Court applied substantive rules on the anti-circumvention of technological protection measures (TPMs), which were introduced in the Copyright Act 2012. The Federal Court expressed its willingness to enforce the TPMs and protect against circumvention in the digital age. The case involved a corporation named Go Cyber shopping (2005) Ltd., which sold and installed circumventing devices enabling users to play potentially hundreds The Federal Court in the suit filed by Nintendo, awarded $12.7 Million as damages and held that Go Cyber “authorized” copying by providing instructions to download header data without the consent of Nintendo constituting infringement. suggests that by adopting “a broad interpretation of a technological protection measure”, the court confirmed Canadian copyright law’s tough stance on copyright piracy.

Obligations of Internet Service Providers

The ongoing conflict between reached the Supreme Court after the decision of the Federal Court of Appeal (FCA) in 2017. Rogers filed before the Supreme Court to consider the scope of the Internet service provider’s (ISP) obligations under the notice and notice system. The FCA ruled that ISPs can disclose the alleged offender’s identity for free. The decision surprised the industry because it would be easier for copyright holders to that they come to financial settlements.

Data protections

Affirming the trial court’s ruling on the copyright protection of seismic data, the appeal in the Alberta case of was dismissed and appeal by GSI to the Supreme Court was denied. On Appeal, GSI argued that Section 101 of should be interpreted properly. , “The correct interpretation of "disclose" also confers on these Boards the legal right to grant to others both access and opportunity to copy and re-copy all materials acquired from GSI and collected under the Regulatory Regime”.

This decision will ensure copyright protection of seismic data by simultaneously providing a framework to access it.

Canadian content and Copyright-related Reviews

In 2017, the Federal Government also adopted initiatives to protect Canadian creators and introduced a policy framework to extend Canadian content worldwide. On September 28, Mélanie Joly, Minister of Canadian Heritage, announced Later in the year, on December 13, the Government officially announced the Parliamentary Review of the Copyright Act, as mandated by the 2012 Copyright Modernization Act.�� The government also to reform Copyright Board of Canada in August.

U.S. Developments

In the U.S., perhaps the biggest copyright case of 2017 was The case dealt with the issue of whether copyright could subsist in the “pictorial, graphic, or sculptural features” of a “design of a useful article” – in this case, cheerleading uniforms. Ultimately, the U.S. Supreme Court held that such design features as the arrangement of lines and shapes on cheerleading uniforms were eligible for copyright protection, so long as they were separable from the useful article in question. In other words, if the impugned designs were imagined in abstraction – say for example if they appeared on a canvass – and thus eligible for copyright protection, then they would be equally eligible for copyright protection as part of a useful article. Therefore, while copyright cannot protect the shape, cut, or dimensions of cheerleading uniform, those design features that are separable from the functional object may be eligible for copyright protection. And while such a holding is not entirely novel, the Star Athletica decision likely sets a valuable precedent for lower courts that have struggled with the extent to which copyright protects the design features of a functional object.

Fair use was also a hot topic in U.S. courts in 2017, with a variety of interesting outcomes in cases across creative media. In , a raunchy parody of the Dr. Seuss classic “How the Grinch Stole Christmas” was held to be the kind of transformative work that qualifies as fair use. Meanwhile, in , a U.S. district court judge held that unauthorized children’s versions – or “KinderGuides” – of classic books by Hemmingway, Kerouac, and the like did not constitute fair use, but rather infringing use. In music, Drake’s use of a spoken word sample from jazz artist James Oscar Smith was held to be fair use in , and in film, a Star Trek fan-fiction movie was held to be a derivative work and not fair use in .

Copyright Around the World

Internationally, toymaker Lego was successful for the first time in a against manufacturers in China of some near-identical toys. 2017 also saw China clearly establish its growing importance on the international copyright stage, with deals in the book industry and increasing pressure on to meet international standards with respect to copyright licensing. Meanwhile in the E.U., courts held that if they perform an essential role in facilitating piracy of copyright-protected material, and that the may constitute copyright infringement.

IP OSGOODE

In 2017, IP Osgoode celebrated one of our very own, , who has been a guiding force in the Canadian intellectual property (IP) landscape for the past 40 years.�� IP Osgoode and Osgoode Hall Law School hosted a special symposium entitled, “” in celebration of Prof. Vaver’s in recognition of “his leadership in intellectual property law as a scholar and mentor”.

The symposium included a distinguished set of participants drawn from Prof. Vaver’s network of former students, colleagues and research collaborators, and highlighted four main themes of Prof. Vaver’s extensive scholarship: overlap and redundancy in the IP system, legislation and reform, users’ rights, and the importance of history. The luncheon keynote speaker, The , CC,QC (Supreme Court of Canada, 2006 to 2015),�� who was introduced by The , QC (Federal Court of Canada, 2001 to 2016), provided a heartwarming speech that gave the audience a glimpse into Prof. Vaver’s early life and career.

To mark the year��Prof. Vaver��received the��Order of Canada, IP Osgoode medal. The medal will be awarded yearly to an Osgoode student in the graduating class who merits special recognition for outstanding achievements in the area of intellectual property law. The student’s achievements extend beyond academic excellence, and can include significant contributions to research in intellectual property and related areas or exceptional commitment and enthusiasm through their participation in intellectual property-related extra-curricular activities.

Following the previous year’s successful partnership with Norton Rose Fulbright LLP, the IP Osgoode Innovation Clinic continued to grow in 2017. On behalf of IP Osgoode, Professor D’Agostino entered into an exciting with the International Law Research Program at the Centre for International Governance Innovation (CIGI) to support the Innovation Clinic. The IP Osgoode-CIGI partnership stems from a mutual desire to facilitate the discovery, dissemination and application of new knowledge concerning practical IP law training of law students and the desire the to facilitate the provision of basic IP legal services to early stage innovators and start-ups. IP Osgoode hired Dr. as the first full-time Innovation Clinic Coordinator. The addition of a full time coordinator has allowed for a substantial increase of the Clinic’s carriage of client files and expanded the Innovation Clinic’s outreach beyond the 91��ɫ and Osgoode Hall communities as well as the Toronto and 91��ɫ Regions into the Waterloo Region and throughout Ontario.

The partnership also supports Prof. D’Agostino’s research project, which consists of a critical evaluation of the Innovation Clinic model as well as clinic models elsewhere, and identifying potential opportunities for developing a sustainable network of clinics in Canada and beyond. The research and report will further dialogues between industry, law schools, law societies, the Canadian Intellectual Property Office (CIPO), levels of government, and other relevant stakeholders regarding the creation of a network of IP law clinics across Canada. This work will be published in 2018 and help inform and support CIPO and federal government initiatives to increase IP awareness, accessibility, and education in Canada.

Top 10 most read 2017 IPilogue articles

Giuseppina D’Agostino is the Founder & Director of IP Osgoode, the IP Intensive Program, and the Innovation Clinic, the Editor-in-Chief for the IPilogue and the Intellectual Property Journal, and an Associate Professor at Osgoode Hall Law School.

With contributions from Stephen Cooley (IPilogue Editor & Osgoode JD Candidate) and Haramrit Kaur (IPilogue Editor and Osgoode Professional Development LLM (Canadian Common Law) Candidate) on Copyright, Sebastian Beck-Watt (IPilogue Senior Editor & Osgoode Graduate) on Trademarks, and Bruna Kalinoski (IPilogue Editor & Osgoode LLM Graduate) on Patents.

The post IP Year in Review 2017 - A Year of Promises Made, Kept, and Abandoned appeared first on IPOsgoode.

After two exciting and lively debates on the principle of technological neutrality (see Sebastian Beck-Watt’s coverage ) and reproduction rights (see Paul Blizzard’s coverage ), IP Osgoode’s Unpack��SODRAC symposium turned to a new panel to ‘unpack’ the paragraphs of [SODRAC] concerning the mandatory (or not) nature of tariffs set by the Copyright Board.

The fresh panel was asked to tackle the issue of whether the majority decision of SODRAC dispelled the notion—coined by Ariel Katz as the “”—that once the Copyright Board approves a tariff, any unauthorized use of a work triggers legal obligations to pay the royalties specified in the tariff and comply with the terms and conditions. The majority judgment’s alleged ‘debunking’ is found in paragraphs [101]-[13]. At paragraph [107] Justice Rothstein (for the majority) wrote: “In the absence of clear authority that this is Parliament’s intent, the burdens of a license should not be imposed on a user who does not consent to be bound by its terms” and, at [112] he concluded “that the statutory licensing scheme does not contemplate that licences fixed by the Board pursuant to [of the Copyright Act (the “A����”)] should have a mandatory binding effect against users [emphasis added].”

This issue was posed to the panel—comprised of Katz ( Intellectual Property Professor), Mario Bouchard (former General Counsel, ), Adriane Porcin ( Copyright Professor), Bobby Glushko (Head of the at University of Toronto), and Howard Knopf (Copyright Lawyer and )—in the form of the following questions: what are the potential implications for collective management organizations (CMOs), copyright users, and the copyright board?; and, more specifically (a major point of contention) does the reasoning of paragraphs [112]-[113] extend to other tariffs approved by the Copyright Board, and if so, does this “debunk” the so-called “mandatory tariff” theory?

Ariel Katz – The spectre is dismissed

Katz promptly asserted that Copyright Board issued tariffs are not mandatory. He focused on the language of of the Act, stating that even though a literal reading of s 68.2(1) appears to grant CMOs a right to collect royalties, it does not grant such a right. The provision reads:

68.2 (1) Without prejudice to any other remedies available to it, a collective society may, for the period specified in its approved tariff, collect the royalties specified in the tariff and, in default of their payment, recover them in a court of competent jurisdiction.

Katz examined the key phrase “default of their payment”, and reasoned that a collective may only collect royalties if the user owes a payment. Logically, Katz argued, if the user does not owe any payment they cannot be in default. As a result, a CMO’s right to collect only extends to a licensee, and not a user who falls outside the definition of the type of users to which the tariff applies.

Katz then argued that the holding was applicable to of the Act, since it is indistinct from s 70.2. He focused on the plain meaning of the word “tariff” and stated that if parliament wanted it to be mandatory, they would have called it a “Levy”.

As a joint intervener in the case with the Centre for Intellectual Property Policy, more of Katz’ argument can be found in his .

Mario Bouchard – Copyright Board-issued tariffs are mandatory

Bouchard followed Katz and began with a criticism of the way the issue was framed for the panel. He was concerned by the classification of s 70.2 licenses as tariffs. Bouchard dispelled this notion by explaining that s 70.2 licenses are not tariffs, they are regulations.

Turning to SODRAC, Bouchard argued in favour of the mandatory tariff theory. He reasoned that the SODRAC decision misapplied, misapprehended, and ignored copyright principles, principles of statutory interpretation, judicial precedents, legislative history, and the way foreign copyright values approach the regulation of collective societies. Concerning copyright principles, Bouchard stated that—well established by the —where permission is required, it is for the user to ask permission from the copyright owners, not the other way around. Asking rhetorically “are we to embrace Google’s approach to copyright: use first, ask forgiveness later”, he conceded that it may be an appealing instrumentalist approach, but Berne still legally controls.

Adriane Porcin – Do users need CMOs in a transactional world?

Porcin followed Bouchard and took a different approach to the issue, seeking not to conclude what the majority decision means. Rather, she examined the context in which the decision was made and inquired into the purpose of the tariff regime, mandatory or not. After detailing the “one size fits all” approach tariffs impose on users, she opined on the purpose of s 70.2 and CMOs in a transactional world where organizations (like CBC) are free to negotiate licensing terms with or without the assistance of the Copyright Board as arbitrator.

She presented four points on this topic: [1] different copyright collectives have different types of relationships with their members, depending on the nature of the work and industry in which the tariff functions, and so the ability to maneuver around s 70.2 depends on the rights granted to each CMO; [2] because some CMOs’ license valuations have disconnected from the utility of those licenses to the users, intervention of the Copyright Board is essential to ensure that users are not subjected to the CMO’s own price setting; [3] the Copyright Board is in a better position than CMOs to assess the fair market price, but the timing of valuations is an issue in fulfilling their role as market surrogate; and [4] CMOs’ evolving governance structures may alleviate the issue. On the last point, Porcin used Access Copyright as an example of a CMO that evolved by shrinking their number of directors and recruiting them based on their industry knowledge and skills. She explained this may be an encouraging step toward reducing the disconnected valuations between CMOs and users).

Bobby Glushko – The lack of clarity about tariffs is not user-friendly

Glushko—Head of Scholarly Communications and Copyright at University of Toronto—brought a unique user’s viewpoint to the panel. Glushko, whose role is to help his institution identify, evaluate and mitigate risk, focused on the uncertainty of this area of copyright law. He explained that in his case, the uncertainty over whether tariffs are mandatory or not—combined with the uncertain potential outcome of valuations involved in those tariff hearings—made his job particularly difficult.

Glushko further explained how the Principle of Technological Neutrality, in light of the SODRAC decision, only exacerbates the uncertainty in his position. It remained unclear what activities constitute copying, whether they are compensable, and what the value of those copies may be.

Howard Knopf – If you don’t like the bridge toll you can swim across

Knopf closed the panel and described why CMOs might see the SODRAC decision as bad for business: it expressed a clear message that, for users, tariffs are not mandatory. Knopf detailed the historical nature of a tariff, proffering an analogy to the old train tariffs from Toronto to Ottawa to regulate train companies, and suggesting that these were only mandatory it you took that particular train—you could ride a bus, plane, bike or hitchhike if they were cheaper, faster or better means to travel. His argument was that the SODRAC decision gives users leeway to choose “alternate means of transportation” by clearing rights for works they want to use through different mechanisms without running afoul of the Act. Bouchard spoke up in disagreement with this analogy, clarifying that users are free to use alternate repertoire (reinforcing the mandatory tariff theory).

Knopf conceded an earlier argument by Bouchard—that tariffs are in fact regulations—but tempered the concession by adding that parliament is capable of adding explicit provisions to make such tariffs mandatory. In the absence of such language, tariffs as regulations still need not be mandatory.

Conclusion

In light of the disagreement between the panelists on whether the mandatory tariff ‘Spectre’ had been debunked, the panel illuminated the difficulty presented by Glushko: ��If we cannot agree on the very nature of tariffs, it makes it difficult for both users and CMOs alike to predict the implications of �����ٸ鴡��’s decision. And, with CMOs acting as representation for authors (and owners), and users often being authors themselves, it is hard to find where the SODRAC majority decision falls with regard to the Act’s role as balancer of the public interest and obtaining a just reward for the creator. Does it tilt in favour of the public interest, giving more transactional freedom to users and authors, and accordingly encourage dissemination of new works? Or, does it inject more uncertainty and place greater barriers to the just reward of creators? One thing is certain: the issue made for a fascinating and passionate panel.

The post Tariffbusters: Does the CBC v SODRAC decision debunk the "Mandatory Tariff Theory appeared first on IPOsgoode.

These��questions were��posed��on February 25th when Osgoode Hall Law School in collaboration with the University of Toronto, Faculty of Law, held Unpack��SODRAC, a symposium aimed at unpacking the myriad of issues covered in the 2015 Supreme Court case , [SODRAC].

Unpack��SODRAC was organized by Osgoode Associate Dean and University of Toronto Professor . The symposium��covered three main topics from the case: Technological Neutrality, Reproduction Rights, and Mandatory Tariffs.

The parties in this case include the appellant CBC, and respondent SODRAC. CBC, Canada’s national broadcaster, is responsible for the creation of many television programs and movies.��SODRAC is a french-language collective society in Quebec within the statutory definition found in of the Act.��The facts revolve��around��incidental copies made by��CBC during the video editing and broadcast preparation process. These are referred to as ‘broadcast-incidental’ copies.

Interveners on the case included Howard P. Knopf and David Lametti from the Centre for Intellectual Property Policy and Ariel Katz, David Fewer and Jeremy de Beer from the Samuelson-Glushko Canadian Internet Policy and Public Interest Clinic, Casey M. Chisick, Peter J. Henein and Eric Mayzel from the Canadian Musical Reproduction Rights Agency Ltd., the Canadian Music Publishers Association and the International Confederation of Music Publishers, and Barry B. Sookman and Daniel G. C. Glover from Music Canada, the International Federation of the Phonographic Industry, the Canadian Council of Music Industry Associations, the Canadian Independent Music Association and Association québécoise de l'industrie du disque, du spectacle et de la vidéo.

Licensing for musical works often uses a 'through to the viewer' model, where synchronization (copies created during editing of the work), broadcast-incidental (copies created during broadcasting of the work) and distribution-incidental (copies created during the distribution of the work) licenses are bundled together. This was not the case with the licensing scheme used by SODRAC.

CBC argues that broadcast incidental copies are the result of technological efficiency and it would contravene the Principle of Tech Neutrality to compensate SODRAC for ephemeral copies of their repertoire whose use has nothing to do with copyright holders' legitimate interests.�� SODRAC argues they are entitled by the Act (and by the decision in the 1990 case ��[Bishop]) to remuneration for the ephemeral copies.

The first panel of the day discussed the emerging principle of technological neutrality in Copyright. The panel was chaired by Professor Giuseppina D’Agostino, and included Craig, Dean Gregory Hagen (University of Calgary), Professor Cameron Hutchinson (University of Alberta), and Richard Pfohl (General Counsel, Music Canada).

Craig surveyed the spectrum of case law that includes three different types of neutrality: Media neutrality at one end and a purposive approach to neutrality at the other.�� This spectrum reflects the fact that prior to SODRAC there was not a clear consensus on the spirit and the content of the principle of technological neutrality. Jurisprudence on this principle stems from two main cases: 1990's Bishop and��2012's����[ESA v SOCAN]. Justice McLachlin (as she was), writing for the court in Bishop,��held that s 3(1) of the Act did not include the right to make "ephemeral" recordings for the purpose of facilitating broadcasting. This meant that licensing was required for both synchronization copies of works and incidental copies.

At the conservative end of the spectrum, the interpretation of media neutrality was introduced in 2006 in����[Robertson]. In that��case, neutrality meant that the Act continued to apply in different types of media, and that actions undertaken when using a new technology should be reviewed rather than the technologies net effect. This position is echoed in Justice Rothstein's dissent in ESA.

In the middle of the spectrum is the functional equivalence approach found in .��In this case, Justice Abella explains that technological neutrality "seeks to have the Copyright Act applied in a way that operates consistently, regardless of the form of media involved, or its technological sophistication."

The purposive approach to neutrality was introduced by Justices Abella and Moldaver writing for��the majority in��ESA. This case represented a major evolution in the interpretation of the Act, and Technological Neutrality, demonstrated by the following quote:

"[5] ... The principle of technological neutrality is reflected in s 3(1) of the Act, which describes a right to produce or reproduce a work “in any material form whatever”. In our view, there is no practical difference between buying a durable copy of the work in a store, receiving a copy in the mail, or downloading an identical copy using the Internet. The Internet is simply a technological taxi that delivers a durable copy of the same work to the end user. "

The underlying technological neutrality issue in SODRAC is the statutory interpretation of the Act, and the Court's refusal to displace the ordinary meaning of the text. The modern Canadian approach to statutory interpretation is Driedger's Modern Principle, as identified in ��[Rizzo].

Specifically, the question is when principles of interpretation (such as the principle of technological neutrality) can displace the ordinary meaning of a statute. This is argued in SODRAC at ]. Exceptions exist in the Act for ephemeral/incidental copying under and .��However, CBC's incidental copying did not fall under them. Based on the legislative history, including failed lobbying by broadcasters to , the majority concluded that it was not possible to displace the ordinary meaning of the Act.��Panelist Greg��Hagan argued��that the majority's interpretation missed the point made in Rizzo at ], which��held that the ordinary meaning could��be displaced if it led��to an unreasonable and/or absurd outcome.

The principle of technological neutrality in statutory interpretation makes it clear that functionally equivalent technologies (in this case the delivery of television and movie programming using a digital content management system versus an analog one) should be treated equally by the Act.�� As broadcasters increasingly deliver their content digitally, SODRAC is problematic because it offers a potential disincentive for the use of these innovative technologies.�� As it stands, there is a good case to make for parliament to expand the incidental copying exceptions under and to avoid this absurd outcome and continue to encourage innovation in media delivery.

Paul Blizzard is a JD Candidate at Osgoode Hall Law School.��Twitter: .

The post Shifting technological neutrality into reverse: UNPACK SODRAC appeared first on IPOsgoode.

The event, held at the��Rosewater Supper Club, brought together academics, intellectual property lawyers, and industry professionals for dinner and discourse.��IP Osgoode's own moderated two��speakers: (partner of Borden Ladner Gervais LLP) and Richard Pfohl (General Counsel, , ).��The frank discussion comprehensively explored the major themes and driving factors of the background cases, along with��the merits of the arguments of every party and intervenor in CBC. Tackling��the vagueness of the principle of technological neutrality — as it was described��several times throughout the evening, a "ghost" of the SCC's��own making — was a recurring motif.

Professor D'Agostino

Professor D'Agostino's opening remarks laid out��the background of technological neutrality (humourously confessing��it has��become a favoured��subject for��her��law school exam questions). She identified��the definition of��the principle as set out by the SCC in ESA:��"different forms of media should be treated the same for copyright purposes, regardless of their level of technological sophistication." She succinctly outlined the��major��critical theme about the principle which��would punctuate��the rest of the evening: there is significant disagreement about what��the principle means and how it should apply.

Professor D'Agostino emphasized��to the room that��the principle was not new, having��existed��in other jurisdictions since 2001, including the US in��.��There, it was known��as the principle of media neutrality. (Tasini��was referred to and followed by the SCC in��.)

The introduction��concluded by accentuating��the principle's ambiguity��perceived��by the��Federal Court of Appeal in their decision: "...ESA, while restating the principle of technological neutrality in copyright law, provides no guidance as to how a court should apply that principle when faced with a copyright problem in which technological change is a material fact." Professor D'Agostino highlighted this flaw by citing Justice Rothstein's dissent in��ESA, where he suggested that "a principle should not override statutory rights in the Copyright Act."

Christina Pallotta

With the principle��described and defined, Pallotta launched into a detailed��overview of the background cases that led to its inception. She��began��with ��(a 1990 SCC decision case about incidental copies for a prerecording in a televised broadcast of a song) which affirmed��a��crucial��distinction between performances and recordings.��Bishop was quoted in��ESA and faced a similar quandary as��CBC: what is to be done when "the introduction of new technology present[s] a situation not contemplated by the drafters of the original Canadian Copyright Act"? The Court in Bishop��distinguished between recording and performing, but they also��underlined the��importance of��balancing needs of technology with��creators' rights.

Pallotta then outlined the driving factors behind the majority and dissenting opinions in��ESA. She noted��that the majority sought to balance the public interest and creator rights (as in��Bishop, and with more backing from��)��using predominantly��economic reasoning��to tip the scales. She��reinforced this methodology by referencing the majority's statement that "[t]he Internet is simply a technological taxi that delivers a durable copy of the same work to the end user."

Pallotta characterized the dissent as taking��a divergent��approach to the issue, with Parliamentary��intent superseding��economic reasoning. She first highlighted Rothstein J's dismissal of the majority's cab metaphor: "taxis need not give free rides." Rothstein J acknowledged the appeal of technologically neutral copyright law. However, Pallotta neatly summarized how his��reluctance to employ technological neutrality��follows a simple three-step argument: [1] copyright��is a creature of statute; [2] it is comprised of a bundle of independent statutory rights; and [3] courts must respect the language chosen by Parliament – not override it. Pallotta's unbiased juxtaposition of majority and dissent in ESA��made a strong case in favour of��applying Rothstein J's opinion.

Richard Pfohl

From there, Pfohl took over by leading the room through a history of CBC��v SODRAC.��He��started by outlining the Board's��, and followed with a concise��retelling of the FCA����under appeal (where they��admitted they did not know what to do with the principle in the first place due to the lack of guidance in ESA –��Pfohl called this a big "red flag"). He��finished by��dissecting every major��argument of the appellant, respondent, and nearly every intervenor in CBC��(, , ;��omitted were arguments from the��).��

After an exhaustive list��of CBC's objections to��SODRAC's incidental copy licencing (including:��“double-dipping”,��“royalty stacking”,��"triple-paying",��“gratuitous cost” and “chilling effect”), Pfohl explained how CBC wanted��the principle��to be applied, synthesizing from their : “broadcast-incidental copies do not engage the reproduction right”, the principle "creates implied license in �����ٸ鴡��’s synch license", and��“a technologically-neutral licence would attribute only nominal value to broadcast-incidental copies.”

SODRAC's ��to CBC's arguments��resembled Rothstein J's dissent in��ESA. Pfohl noted��how��SODRAC posited that there is in fact no layering or double-dipping (the acts in question in this case are not simultaneous, unlike in��ESA,��where a video game was��either downloaded or bought in person, but not both) and the court should not��upset Parliament’s balance: “neither the Board nor the Courts can 'balance' away a right that is provided by statute.”

As Pfohl moved through��the intervenors, it was clear they provided the Court with unique and compelling arguments. CMRRA on the importance of the fundamental divisibility of copyright (owners are entitled to divide and subdivide their exclusive rights) and��a consistent application of the which has always protected broadcast-incidental��copies. Music Canada��(a ��promoting this interests of numerous��companies engaged in all aspects of the recording��industry, and which Pfohl represents ) ��to reject Functional Equivalence as being inconsistent with the language, structure, and history of the Act.

CIPPIC's addressed a peripheral yet��pressing contemporary issue at stake in��CBC: what do we do with the practical reality that ephemeral copies are ubiquitous in digital technology (you likely��just made an ephemeral copy��of my blog post in your web cache – I'll take cash or cheque)?��CIPPIC suggests that��“fleeting, transient, impermanent” copies should not be protected, and those copies that are protected must be “durable”.

Regardless of how the��SCC��applies��statutory language to the facts and context of CBC's ephemeral copies, the threshold��issue raised by CIPPIC��appears more than��merely��trivial. The Court would be wise to address this concern irrespective of the ultimate holding of the case.

Conclusion

A brief round of comments followed, enthusiastically kicked off by counsel for CMRRA, Casey Chisick, who provided an astute��summation of the principle of technological neutrality. Chisick��analogized the criticism of the SCC majority's��ESA��principle as "wrestling with a ghost/monster of their own making, which creates an unpredictable situation."��Professor D'Agostino expanded on��this comment in her closing remarks, saying that this case has the opportunity to "play ghostbuster" as dissents can often become majorities.

Perhaps Rothstein J's dissent in ESA will provide a more consistent methodology for the Court to apply the Copyright Act, and a catalyst for Parliament to recognize the need to "future-proof" their legislation so technology does not��impede on creators' rights.

(The slides for the event may��be accessed .)

Jordan Fine is the IPilogue Content/Publication Editor��and a JD Candidate at Osgoode Hall Law School.

The post TIPG Copyright and Technological Neutrality Event: Ghostbusting with Professor Giuseppina D'Agostino, Christine Pallotta and Richard Pfohl appeared first on IPOsgoode.

��editor ��originally reported on this case back in a September ��on the SCC’s decision to grant leave to appeal. The case arose out of the Board’s ��to collect royalties on these aforementioned ephemeral copies. The ��disagreed on tech neutrality grounds, arguing that under those principles royalties should not be charged for incidental copies since payments are already made for the use of the original content in final broadcasts. The Board, finding for , relied on the SCC’s decision in , which determined that because incidental copies add value to a final broadcast they should attract separate royalties. Furthermore, the SCC in Bishop narrowly interpreted the ��(the “Act”) to conclude that incidental copies made in the process of creating a broadcast were not part of the broadcast right itself.

At the FCA, CBC argued that Bishop was no longer good law. As ��by some commentators on the case,��CBC argued that the SCC in��fundamentally changed the law through its statements about tech neutrality. The Court however decided that neutrality did not override the language of the Act that gives owners of music works the exclusive right of reproduction. The FCA said in ��that nothing in ESA “would authorize the Board to create a category of reproduction or copies which, by their association with broadcasting, would cease to be protected by the Act. ESA did not explicitly, or by necessary implication, overrule Bishop v Stevens.” The Court further stated that since the majority’s reasoning in ESA did not rely on or refer to technological neutrality the case did not provide guidance on applying the principle to the situation at hand.

The importance of this appeal has been discussed by many members of the IP world. One commentator�� that the greatest danger in this case is that the SCC could potentially “roll back its finding that technological neutrality is a foundational principle within the law.” Additionally, if the SCC rules that all copies, incidental or not, are copies under the Act��there is “the very real possibility of payment demands for the myriad of copies that occur through modern technologies.” In this world of digital copies and Internet file sharing, accessing digital goods could potentially become an expensive task.

Although a webcast of the oral arguments was not available at the time of the writing this post, the parties’ ��are – and prove to be interesting reads. CBC ��that SODRAC is the first copyright holder to “attempt to monetize broadcast-incidental copies…[which is] a subversion of the purpose of the Copyright Act in an attempt to generate economic rents through a layer licensing scheme.” CBC contends that the layered licensing scheme at question was upheld by the Court through a fundamental error of law, “namely the rejection of technological neutrality as a guiding principle in the interpretation and application of the Copyright Act.” CBC asserts in its factum that this layered approach to licensing is “impermissible double-dipping that violates technological neutrality.” It is also interesting to note one of CBC’s requests that if the SCC decides that a licence is indeed required for incidental copies then the royalty should be reduced to a nominal amount “to reflect the fact that broadcast-incidental copies do not have independent economic value.” This request seems to reflect the reality that incidental copies tend to be a part of the production process in creating content, and are not necessarily “valuable” items on their own.

The SODRAC ��on the other hand contends that CBC is attempting “to reverse decades of settled law” and does not mince words in its opening paragraphs:

This appeal amounts to an attempt by CBC to persuade this Court, through a misuse of the principle of technological neutrality, to upset the existing statutory balance in relation to broadcast-incidental copies and to substitute its own policy preferences for those of Parliament, enabling CBC to escape liability for copies it is making and deriving benefits from, and that it has been making and paying for, for decades.

It is also fascinating (and sort of juicy!) to scan through the SODRAC factum and see a couple portions crossed out, specifically the paragraph describing how CBC has made tape and digital broadcast-incidental copies over the years for its programs.

An attendee of the hearing����on the opening stages of the appeal, saying that it did not start well for the CBC with the SCC being “clearly skeptical” of its arguments. In discussing technological neutrality however, one of the intervenors () suggested that a test should be established for when a copy should be treated as a copy under the Act. CIPPIC’s fear is that in this digital world that constantly uses ephemeral copying to function, literally interpreting the right to reproduction would give copyright owners control over everybody else’s access to digital content – which is not realistic.

It has been ��that this case��may “serve to reinforce the importance of the technological neutrality principle and confirm that in the digital world, not ever copy is a copy for the purposes of the Copyright Act.”��I agree with this position. Although SODRAC relies on the established law, the law must keep up with our ever-changing (and technologically advanced) world. It is simply impractical to suggest every copy is a copy under the Act when the way we access and store digital information heavily relies on ephemeral copying. To charge royalties on the digital content used in the production process before the final (valuable) broadcast is made seems to be an inappropriate cash-grab and abuse of copyright owners’ powers. However, the conclusion that the law may lend itself to could be completely different, and unfortunately we can never predict with certainty how the bench will sway. I guess we will just have to sit on the couch and find something else to watch until the final result is ready for the air.

Jaimie Franks is an IPilogue Editor and a JD Candidate at Osgoode Hall Law School.

The post CBC v SODRAC Episode III: Oral Arguments Heard at the SCC appeared first on IPOsgoode.

Following effusive praise from as ‘one of the leading architects in IP’, and an introduction from ��in which we were reminded that Justice Rothstein’s exposure to IP had only begun in earnest after his appointment to the Federal Court in 1992, Justice Rothstein took to the podium. More information on his background and career can be found .

With talks from previous years taking in topics like the Copyright Pentalogy, or the art of litigating IP at the Supreme Court, the focus of the day was really on the passage of a case up the appellate ladder, and how the technical savvy of the judges filtered away to generalism as a case rose. Justice Rothstein elaborated about how trial judges at the Federal Court (where the majority of IP cases will begin) frequently come from an IP background themselves. As such, judges are not only closer to the factual record, but are also more likely to have some degree of expertise themselves. Beyond this, he explained, expediency plays less of a factor than at the appellate level, and so trial judges frequently enjoy greater access to counsel, and, with that, more time to develop an understanding of the topic.

The appellate courts are populated by a more generalist breed of judge, which is no bad thing. Citing article from Chicago’s 7^th Circuit Chief Judge Diane Wood, he noted that generalist judges can benefit from experience with a wider variety of legal issues, leaving them able to make connections between the technical subject matter and analogous areas of law to ensure that the overarching principles at hand are not ‘lost in the forest of technical detail’.

This generalism, then, is reflected in the standard of review that the Court has been setting for IP, with a high level of deference paid to most of the findings of the various administrative bodies that govern many of the issues that occur in IP. Post-Dunsmuir, we see reasonableness applied to the findings of administrative tribunals for issues of fact, mixed fact and law, and even some questions of law, with a relatively restrictive reading of when to apply correctness. However, Justice Rothstein was quick to stress that he hasn’t necessarily been seeing eye-to-eye with the Court in interpreting how to apply this standard. In , for example, he advocated unsuccessfully for a restriction of the deferential standard to cases in which there was a strong privative clause. Conversely, in , he suggested that the court had seemingly applied ‘reasonableness’ in name only when they found that the Copyright Board’s application of the ��fair dealing factors was ‘unreasonable’, leading to some tension between the Copyright Board and the Court.

It seems that the Court is still trying to figure out exactly how the standard of review should be defined here, and whether the nature of the tribunal requires an application of the standard of review analysis in every case, or whether a single standard can be etched out that might apply consistently. Justice Rothstein made no bones about the fact that he is ‘no fan of the standard of review industry’, but didn’t appear to have a solid alternative to suggest either. That said, we were reminded to keep an eye on prima facie unrelated developments in the law outside of IP, citing the recent����decision as one that may shape the future of the standard of review for cases dealing with factual matters, or ones of mixed fact and law.

The main impression that I received here, was that Justice Rothstein’s idea of the need to display deference was very much connected to the difference between generalism and technical expertise. Answering a question from Professor , he noted that he would have dispensed with expert evidence in a trademark case regarding confusion, as the notional ‘reasonable person’ (a ‘casual consumer somewhat in a hurry’) can easily be role-played by a judge (or any lay-person, for example). On the other hand, in a case like , the notional ‘person having ordinary skill in the art’ is, by definition, an expert in their field relative to a generalist judge, and so expert evidence and assistance is invaluable to the Court. Perhaps this signals a desire for separate standards of review to apply to each of the various disciplines of IP, with respect for the subject matter at hand.

Although this is Justice Rothstein’s final year at the Supreme Court, he has been an invaluable voice in IP, writing many of the Court’s decisions on the area. Whichever direction the court takes after the end of his term, IP enthusiasts can look back on an era in which an unprecedented number of issues have been decided at the Court. Hopefully, Justice Rothstein will have the opportunity to address a few more before that day comes.

Andrew Hunter is an IPilogue Editor and a J.D. Candidate at Osgoode Hall.

The post IP Osgoode Speaks Series featuring Justice Marshall Rothstein - Generalist Judges, Technical Expertise, and the Standard of Review appeared first on IPOsgoode.

As a result, discerning whether the specification has a promise of a specific result can have significant impact on the validity of a patent. The recent Federal Court of Appeal decision of Apotex Inc v Sanofi-Aventis Canada Inc (“Sanofi”), for which the Supreme Court has granted leave to appeal, advocates for a degree of constraint when determining whether a patent contains a promise.

In Sanofi, the Court held that it must look to the patent to determine whether it contains an explicit promise that the invention will achieve a specific result. Since there is no obligation on the part of the inventor to disclose the utility of his invention in the patent, not every patent contains an explicit promise of a specific result.

The idea of a “promise doctrine” is the subject of a NAFTA challenge by Eli Lilly. Central to Lilly’s argument is that two of Lilly’s patents were invalidated on the ground they were not useful, notwithstanding their approval by Health Canada and their commercial success. Lilly alleges that the promise doctrine is inconsistent with NAFTA as it imposes a significantly higher burden on the patentee than the standard of utility mandated by NAFTA.�� Specifically, Lilly alleges that Canada’s failure to abide by its NAFTA obligations has resulted in the unlawful expropriation of its patent rights.�� Lilly argues that the “promise doctrine” has caused a dramatic and unprecedented shift in Canada’s utility standard and is inconsistent with the utility standard embodied in NAFTA.���� Lilly pointed out that one of the patents was challenged and upheld in 18 countries throughout the world, and Canada was the only jurisdiction to invalidate on the basis of inutility.

Canada, in response, has argued that the “promise doctrine” was endorsed by the Supreme Court as early as 1981 in Consolboard v MacMillan, while NAFTA came into force in 1994. There is no requirement to make a promise, but a promise may be made for a variety of reasons, including where a new and non-obvious use of a known compound is the essence of the invention or in selection patents where a sub-species of the genus has a surprising and non-obvious advantage. Canada further notes that NAFTA does not provide direction as to how the core patent concepts of “new”, “inventive”, and “industrial application” are to be interpreted and applied in particular patent cases.

The Sanofi decision appears to have pushed back on certain elements of the “promise doctrine” that Lilly complains of in its NAFTA challenge. Lilly alleges that the Courts read into the patents an “implied promise” that the drugs would work in the longer term based on the chronic nature of the conditions being treated. In Sanofi, the Court of Appeal finds that the Trial Judge erred in finding a promise on the basis of inferences, in the absence of clear and unambiguous language. Sanofi thus draws a distinction between the potential use of an invention and an explicit promise to achieve a specific result, and finds that a goal is not necessarily a promise.

As noted by Canada in its Statement of Defence, domestic patent law continues to evolve, including the promise doctrine.

One possible way forward is to limit the promise doctrine in a manner similar to the Federal Court’s recent treatment of the heightened requirements for a “sound prediction” of utility.�� In a July 2014 Apotex v. AstraZeneca (“�����ٰ����ܱ�Ա𳦲�”) decision, Justice Rennie concludes that the patentee should only face a higher burden for disclosed utility in “new use for known compound” type patents.�� The rational was that, for these “new use” patents, the entire invention resides in the new utility, hence there should be a higher standard for showing utility.

The appeal of Astrazeneca to the Federal Court of Appeal, the Sanofi appeal to the Supreme Court of Canada, and Lilly’s NAFTA challenge will continue the evolution of these doctrines.

David Heller is a Partner at the Toronto office of Ridout & Maybee LLP, where he��specializes in the areas of pharmaceuticals, biotechnology, and chemistry.��David has been recognized as a leading IP lawyer in the Chambers Global Guide 2014, 2013, and 2012 rankings.

The post Promises That Can Kill: An Update appeared first on IPOsgoode.

As Dr. Hudson pointed out during her presentation, the��CCH��ruling is often regarded as a defining moment for clarifying the rights of users with respect to the fair dealing exceptions contained within Canadian copyright law. Writing on the tenth anniversary of the decision, legal scholar����stated that��CCH����(sic). However, Dr. Hudson’s presentation and on-going research calls into question the connections between legal and academic interpretations of the law and the effects that this “law in the books” has on the real-world activities of users themselves.

Dr. Hudson’s research is based on ongoing fieldwork and interviews conducted at leading cultural institutions in Canada as well as Australia, the United States, and the United Kingdom since 2004. This research focuses on practitioners and their experiences in relation to copyright law and user-rights exceptions, such as fair dealing and fair use. The objective of Dr. Hudson’s research is to undertake an empirical and qualitative study of users experiences with copyright law and fair dealing exceptions in order to see if, and how, Canada’s cultural organizations have altered their practices and policies in response to the��CCH��decision. Dr. Hudson’s work examines if the CCH decision has contributed to greater reliance on fair dealing principles in their everyday work.

In the Canadian context, this research has found a significant gap between the academic and judicial responses to��CCH��when compared to the responses of cultural practitioners working at Canadian cultural institutions. For example, despite the��CCH��ruling, when compared to their counterparts in the United States, practitioners at cultural institutions in Canada demonstrate an “extremely limited reliance on fair dealing” and a “muted” response to��CCH��more generally.

For Dr. Hudson, this disconnect demonstrates that drafting legislation by primarily focusing on the “law in the books” misses the contextual nuances associated with how the law is understood and used in practice. Structural, political and economic conditions may be contributing factors to this, as her research shows that in the United States there are often a greater number of centralized and specialist copyrights managers than those found in Canadian cultural institutions.

Her research also points to how other factors, including the risk preferences of individual organizations, historical and philosophical factors, institutional factors, and government or funding mandates contribute to how different cultural institutions create and update their copyright management techniques.

In order for cultural institutions in Canada, and elsewhere, to benefit from the flexibilities provided by fair dealing or fair use exceptions, Dr. Hudson argues that there needs to be a “rethinking, dismantling, and rebuilding” of existing copyright management processes and not just “attitudinal shift”. She cautions that this rebuilding needs to��be realistic about the specific social and economic contexts and circumstances that cultural institutions are implicated in, in order to propose and implement appropriate levels of change.

Dr. Hudson’s research empirically highlights many of the so-called��“chilling effects”��that dissuade users from benefitting from legal exceptions to copyright law. Unfamiliarity with the nuance of copyright law as well as the actions and campaigns of rights-holders to discourage the use of their goods may deter users from exerting the rights they have been granted under copyright law. For example, even if the use of copyrighted materials accords with fair dealing exceptions, users may still have a fear of litigation from rights-holders and avoid putting themselves in such a position. In their recent volume, , Drs. , , and , argue that this subtle discouragement has the “tendency to control and contain culture is extending into all dimensions of Canadian social life” (p. 38). ��It is important to highlight the legal aspect of these exceptions and their role in Canada’s copyright system.

The CCH ruling finds that Canada’s fair dealing exceptions are (3(a) para.48). These exceptions are designed to balance the needs of users and creators for the betterment of Canadian society at large. However, the CCH ruling also rightly notes that it is not always easy to determine when certain uses are or are not “fair” and legal. The SCC maintains that we must therefore consider the purpose (3(a)i), character (3(a)ii), amount (3(a)iii), availability of alternatives (3(a)iv), nature (3(a)v),�� and effects (3(a)vi) of each use when determining its “fairness”.

The use of fair dealing exceptions raises other questions, including how these uses may or may not detract from future creativity and the strength of Canada’s content and culture industries. This IPOsgoode Speaks Series event ended with a lively debate on the role that academics, through their legal criticism and analysis, play in the Canadian cultural sector and media and content industries. Attendees discussed whether or not scholarly activities advocating for the use of fair dealing exceptions detracted from investment in commercial activities and undercut the livelihoods of the country’s artists and creators.

Dr. Hudson’s research helps to ground and illuminate such discussions by offering empirical evidence into how users and practitioners in Canada’s cultural institutions interpret and interact with the country’s copyright laws and fair dealing exceptions.��

Joseph F. Turcotte is an IPilogue Editor and a PhD Candidate in the Communication & Culture Program (Politics & Policy) at 91��ɫ.

The post Users’ Rights and Realities: CCH, Fair Dealing, and the Experiences at Canadian Cultural Institutions appeared first on IPOsgoode.